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Thursday, 13 March 2008

The IPKat's friend Daniel Greenberg (Lexsynergy) has sent him the following note on the first appeal in a domain name dispute involving a co.za domain:

"The South African Institute of Intellectual Property Law (SAIIPL) has decided its first appeal in Telkom SA Ltd & TDS Directory Operations (Pty) Ltd v The Internet Corporation (ZA2007-0005) involving the domain names phonebook.co.za and whitepages.co.za.

Telkom (the complainant) is the owner of "the phone book" logo which is used, under licence, for various telephone directories throughout South Africa. Telkom also claims ownership of the common law trade mark THE WHITE PAGES. After an unsuccessful complaint Telkom filed an appeal under the recently launched ADR Regulations.

The appeal was dismissed. However, the panel disagreed with the certain findings of the initial adjudicator, the most notable being that of reverse domain name hijacking. The panel held that “Litigants and their legal advisers must be free to launch proceedings to protect rights - even if incorrectly perceived - without fear of castigation.”

The trade mark relied upon contained the following disclaimer:

"Registration of this trade mark shall give no right to the exclusive use of the word PHONE, or of the word FOONBOEK, or of the word BOOK, each separately and apart from the mark. The trade mark is shown in the English and Afrikaans versions, being two of the official languages, in which it is or will be used, the two versions represented having equivalent meanings. In practise, both versions of the trade mark will be used either separately or together, but when used together they will not necessarily be in close approximation one to the other."

Telkom argued that the initial adjudicator erred in interpreting the disclaimer in that it merely limited its rights in respect of the word Phone on its own and the word Book on its own but not the combination of the two words. This absurd claim led to the panel citing numerous cases dealing with generic/descriptive marks, the most concise being Dunlop Rubber Co. Application (1942) 59 RPC 134 at 157: “Some words are so apt for normal description that no trade mark use and momentary distinctiveness can justify a permanent monopoly.”

The IPKat remains fascinated by disclaimers and by the potential for problems in multilingual jurisdictions. This appeal touches upon both.Merpel says, you can read the full decision here.

The Afro-IP weblog is working to provide a flow of reliable and relevant IP-related information concerning disputes, enforcement, commercialisation and other key issues relating to intellectual property rights in Africa. This venture is now in the middle of its fourth month from launch and is gradually gaining both credibility and momentum: it now receives around 2,000 casual visits per month, with over 50 'regulars' who receive each post by email or read it via RSS.

The Afro-IP team, led by Darren Olivier, needs a larger and more representative team if it is to fulfil its goal. It is therefore looking to do some recruitment. If you're based in Africa or closely involved with African IP issues and you'd like to be considered for the Afro-IP team, send Darren a short email that summarises your interests and IP knowledge or expertise. You don't have to have blogging experience, since the skills required are few and pretty easy to acquire.

2 comments:

Anonymous
said...

I can see why they lost on "The Phone Book" but they ought to have won on "Whitepages". Good job the panel found against "reverse domain name hijacking" as, if I read this correctly,finding the other way would have driven a coach,horses and retinue through the entire process.

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